COVID-19 may be impacting the correct naming of inventors on patent applications.
Why might this be occurring? While many theories have been floated, the most prominent one is the increased (and almost exclusive) use of online conferencing for product development brainstorming sessions. This article gives an overview of what is required to be named as an inventor on a patent application and suggested best practices to avoid the inventorship issues that have arisen during the pandemic.
Who Can be Named an Inventor?
The question of who is a named inventor on a patent application can be tricky to answer, especially if there are multiple people involved in a project or outside office/university politics become involved. From a pure legal standpoint, an inventor is the person who conceives of the invention that is claimed in a patent application. Conception of an invention is murky to define. The U.S. Federal Circuit Court held that “conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” (See Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d. 1367, 1376 (Fed. Circ. 1986)). In layman’s terms, an inventor is a person who has an idea, reduces the idea to practice or “puts meat on the bones” and this invention is then claimed in at least one claim of a patent and/or patent application.
Importantly, sometimes it is hard to identify the person who actually conceived of the invention, so a reverse analysis may take place and evaluate what the person did during the development process and whether it rose to the level of conception. With this in mind, examples of who is not an inventor include someone who: (i) performed experiments related to the invention; (ii) suggested the desired results to be obtained via the invention; (iii) discovers the problem to be solved by the invention, but not the solution; (iv) evaluates the invention; (v) assists the inventor to reduce the invention to practice (builds or constructs the invention); and (vi) contributes obvious elements or improvements to the invention.
Inventorship and ownership sometimes get mixed up during the naming of inventors. These are distinctly different concepts. As discussed above, inventorship comes into play when one conceives of an idea and reduces that idea to practice. Whereas, ownership is determined by property law. Ownership of a patent or patent application will initially vest with an inventor. It is critical to understand that in the event there are multiple inventors named on a patent or patent application, each of those inventors will own a 100% ownership share of the patent or patent application. However, the inventor(s) can transfer their ownership share by either selling it to another person or entity or because of their employment status will be required to transfer their 100% share to their employer.
COVID Collaboration Conundrum
As briefly mentioned above, COVID and the corresponding commercial lockdown has resulted in a significant migration of work from office to home. Most, if not all companies, are now conducting research and product development meetings over the internet via video conferencing platform (e.g., Zoom, Microsoft Teams, etc.). The loss of in-person collaboration settings and inconsistent invention disclosure tracking is resulting in incorrect identification of inventorship designations. When in person meetings occurred in the past, many companies utilized white boards (and other techniques) to memorialize invention discussions and idea creation. Because of the lack of in-person contact and disconnect with video interactions it has been difficult to identify contributors to the invention conception stage and has caused errors in the accurate identification of the true inventors of the developing product inventions.
The inventorship identification issues have also been seen in university settings. Anecdotal stories of increased cross-university collaboration have been heard from the academic world. The theory is that because of the increased time out of the lab due to the pandemic restrictions, university professors working in the same research areas are talking more to each other and collaborating more on possible solutions in their respective areas of focused research. This increased collaboration of employees of two different universities and the rules surrounding joint inventors (e.g., each have a 100% ownership share) could lead to inventorship and ownership issues if any patent filings result from such discussions. Plus, it is highly doubtful that if two professors are “spit balling” ideas over a video call about a possible solution to a long-standing problem that anyone will be taking notes on who conceived of what.
As noted above, joint inventorship can be a tricky situation given that each inventor must contribute to the conception of the invention. This issue is seen in private industry and universities. Cross-collaboration with two universities can present thorny latent issues both from an inventorship and ownership standpoint. It is important to note that the degree of conception/contribution does not have to be equal for joint inventors to be named on a patent or patent application. For example, if Inventor A conceives of the concept in nine out of the 10 claims in a patent and Inventor B conceives of the concept claimed in one of out the 10 claims in the patent, both Inventor A and Inventor B (or their respective company or university employer) have an equal 100% ownership share in the patent. The noted “thorny” issue is if the two universities that employ Inventor A and Inventor B don't have some sort of agreement in place before the filing of a patent application. Many problems will arise, like, who controls the patent prosecution, who has the rights to license or sell the patent. It should be noted that joint inventor issues typically are not seen in the private sector because the inventors are all employees of the same company. The caveat for the medical device space is that if the inventor is a non-employee (e.g., a physician developer), then unless there is a pre-existing agreement in place, the inventorship and ownership issues could arise unless there is a concrete policy in place on invention disclosure (to address the inventor issue) and an assignment agreement in place to address the ownership designation.
There could be significant problems if an inventor is incorrectly named. Specifically, the patent being found to be invalid. However, inventorship can be corrected and the patent standing salvaged if the mistake was made in good faith. But, if the misnaming of an inventor was done with “deceptive intent” then the patent will be deemed to be invalid with no ability to reinstate. The patent law provides an administrative pathway to correct inventorship in the event an honest mistake was made in listing an incorrect inventor. This pathway has been and currently is a well-traveled road for many private companies and universities as the patent application makes its way through the prosecution process and even after it has been allowed.
Patent Best Practices
The COVID-19 pandemic has impacted all businesses and universities in some manner. The shift from in-house collaboration to exclusively remote conferencing increases the possibility of mistakes being made with identifying the correct inventors when inventive concepts are developed. Companies should follow a best practice policy of contemporaneously identifying the conceiving inventors of an inventive concept and institute a mandatory time limited creation of an invention disclosure form that identifies the inventors following the remote session. In addition, during the pandemic, it would be advisable to take a belt and suspension approach and utilize a pre-application filing claim chart to accurately name the inventors of each claim prior to the filing of the patent application. This claim chart process should also be used by universities if joint inventors are involved in a cross-university patent filing.
Although COVID has caused significant challenges to businesses, it has also provided an opportunity for developing clearer and more contemporaneous procedures for identifying the proper inventors of remotely developed inventions. Remote work during the research and development process is likely not going away in the future, so the sooner companies embrace the need for heightened record keeping and timely documentation of these activities, the lesser the likelihood of any future misnamed inventors and possible patent invalidation issues will occur.
John W. Boger is a partner with the boutique Intellectual Property Law Firm of Heslin Rothenberg Farley & Mesiti P.C. and is the Chairman of the firm’s Medical Products and Technology Practice Group. Before attending law school, Mr. Boger worked for eight years with a large orthopedic device manufacturer in various product development and marketing positions.